Hacking Your Non-Compete

Conference:  BlackHat USA 2019



Importance of clear separation agreements and documentation in determining ownership of intellectual property in software development
  • Having formation documents with provisions for IP ownership and key decisions can prevent disputes in the future
  • In absence of a separate agreement, co-authors of software have undivided ownership share in the entire work of the source code
  • Classification of developer as employee or contractor is critical in determining ownership of IP
  • Developers need to document and carve out pre-existing IP from any IP being assigned to the employer
  • Clear separation agreements can avoid disputes over IP ownership
Three developers quit their job to build a better Analyst tool platform but run out of money without acquiring new clients. Two of them want to open-source the project while one wants to sell it. The third developer grabs all the source code documentation and successfully sells it. The purchasing company takes the legal position that they purchased the software and documentation from an owner of the company. The two developers who want the open-source project sue the third developer and the purchasing company. The key takeaway is that having clear separation agreements and documentation can prevent such disputes over IP ownership.


Nearly everyone in the cybersecurity community found themselves contemplating leaving an employer, been offered an opportunity to really stretch their wings as part of a start-up or just become fed-up with their current work environment. While many of us are masters of technology few of us have a good understanding of what comes next when planning to leave one company and move to the next. Does your employment agreement allow you to take the next job or jump on that great opportunity? Are you going to be able to go to a company that your employer sees as a competitor or live that startup dream?We'll present real cases involving competing with a former employer, soliciting work from a current client at your new company and how to protect intellectual property you bring to a new employer. You'll hear from a computer forensics investigator on where people typically go wrong when transitioning from one employer to the next and from a technology and intellectual property attorney on the real legal outcomes of those cases.Commonly misunderstood concepts like "work for hire" and "right to work" will be explained. We'll talk attendees through the working details of non-compete agreements, operating agreements between tech company founders and what to do when it all goes wrong. Finally, we'll discuss what you should do after having left a previous employer and you receive an angry letter saying that you've violate multiple agreements and are about to be sued down to your socks. You'll leave the session better understanding of the details of your non-compete or employment agreement and what is enforceable versus hot air.



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